EPO's Approach To The Patentability Of Plant-Related Inventions

Author:Mr Colm Murphy, Chris Holly and Steve Cuss
Profession:Cooley LLP

Last month, the European Patent Office (EPO) issued the much anticipated Written Decision associated with case T1063/18. We have previously written about this case in our alert " EPO May Return to Patenting Plants Obtained by an Essentially Biological Process," where we discussed how the EPO's approach has appeared to flip-flop between either excluding or not excluding claims directed to plant products that have been obtained by an essentially biological process. T1063/18 firmly adopts the stance that claims directed to such products are patentable. However, whether this position will be maintained by the EPO is unclear.

As we previously reported, the EPO announced the take-home message of this Decision in an earlier press release, such was the interest surrounding the Decision. The now-issued Decision is consistent with that announcement and provides the Board's reasoning. The Board also provides an explanation of when, in its opinion, this issue should be referred to the Enlarged Board of Appeal (EBoA); i.e. when the EPO's approach should be reconsidered.

This Decision is the latest development in a long-running debate relating to the patentability of plant-related inventions under the European Patent Convention (EPC). Broadly speaking, three separate points of law have been the subject of debate since the EPC was adopted. These are: i) when product claims directed to plant varieties are patentable, ii) when methods for the generation of plant products are patentable, and iii) whether plant products are patentable even if they have been obtained by unpatenable methods. To put the latest decision in context, we describe this background below.

The legislation

Article 53(b) EPC sets out the relevant exclusions from patentability, and recites:

European patents shall not be granted in respect of: (b) plant or animal varieties or essentially biological processes for the production of plants or animals; this provision shall not apply to microbiological processes or the products thereof;

Product claims directed to plant varieties

The first question, when plant varieties are patentable, was addressed in G 1/98 (Dec 1999). Essentially, the EBoA needed to be decide whether "European patents shall not be granted in respect of: ... plant or animal varieties" should be interpreted broadly or narrowly.

Firstly, it is important to know what a "plant variety" actually is. The EPC provides the following definition:

"Plant variety" means any plant grouping within a single botanical taxon of the lowest known rank, which grouping, irrespective of whether the conditions for the grant of a plant variety right are fully met, can be: (a) defined by the expression of the characteristics that results from a given genotype or combination of genotypes, (b) distinguished from any other plant grouping by the expression of at least one of the said characteristics, and (c) considered as a unit with regard to its suitability for being propagated unchanged. Rule 26(4) EPC

The rationale for excluding plant varieties from protection was apparently to avoid dual protection with that provided by the International Union for the Protection of New Varieties of Plant (UPOV) Convention. As such, it is important to note that the definition within the EPC is identical to that in the UPOV Convention.

In G 1/98, the EBoA decided that a product claim that identified a specific plant variety would not be patentable (Section...

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